To: | GOOGLE LLC (tmdocketing@google.com) |
Subject: | U.S. Trademark Application Serial No. 88234206 - WIDEVINE - N/A |
Sent: | October 04, 2019 04:56:46 PM |
Sent As: | ecom104@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88234206
Mark: WIDEVINE
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Correspondence Address:
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Applicant: GOOGLE LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: October 04, 2019
The Office has reassigned this application to the undersigned trademark examining attorney.
This Office action is in response to applicant’s communication filed on August 29, 2019.
In a previous Office action(s) dated March 28, 2019, the trademark examining attorney refused registration of the applied-for mark because applicant was required to satisfy the following requirement(s): An amended description of the mark and clarification of color claim was required.
Further, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
AMENDED DESCRIPTION OF MARK AND CLARIFICATION OF COLOR CLAIM REQUIRED
In the response dated August 29, 2019, applicant adopted the suggested amended mark description which did not include color, and further included in the miscellaneous statement section that color is not claimed as a feature of the mark. However, the mark itself has color. Therefore, applicant must clarify whether color is a feature of the mark because, although the drawing shows the mark in color, the application does not state whether color is a feature of the mark. 37 C.F.R. §§2.37, 2.52(b)(1), 2.61(b); see TMEP §807.07(a)-(a)(ii).
Applicant may respond to this requirement by satisfying one of the following:
(1) If color is not a feature of the mark, applicant must submit a black-and-white drawing of the mark to replace the color drawing. See TMEP §807.07(a)(i). However, any other amendments to the drawing will not be accepted if they materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.14 et seq. Applicant must also submit a revised description of all literal and design elements in the mark, deleting any reference to color, if appropriate. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. The following description is suggested, if accurate: The mark consists of four slanted parallelograms connected at their right tips. The parallelograms are to the left of the word “WIDEVINE” .
(2) If color is a feature of the mark, applicant must submit a statement (a) listing all the colors that are claimed as a feature of the mark and (b) describing all the literal and design elements in the mark that specifies where each color appears in those elements. 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii). Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d). The following color claim and description are suggested, if accurate:
Color claim: “The colors green, blue, and dark blue are claimed as a feature of the mark.”
Description: “The mark consists of four slanted parallelograms in various shades of green and blue connected at their right tips. The parallelograms are to the left of the word “WIDEVINE” which is displayed in dark blue lettering.”
See TMEP §807.07(b).
From applicant’s response dated August 29, 2019, it appears as though applicant does not want to claim color as a feature of the mark. If this is the case, applicant should consider submitting a black and white drawing of the mark, which is explained above.
This requirement is made FINAL.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)
Erdman, Rachel
/Rachel Erdman/
Examining Attorney
Law Office 104
(571) 272-4717
rachel.erdman@uspto.gov
RESPONSE GUIDANCE